Ex Parte Yoneda et al

Board of Patent Appeals and Interferences

Jun 29, 2010

11000309 (B.P.A.I. Jun. 29, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte KENJI YONEDA, YASUSUKE OSHIMA,
and RYO NIHEI
____________

Appeal 2010-001281
Application 11/000,309
Technology Center 1700
____________

Decided: June 29, 2010
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Before PETER F. KRATZ, JEFFREY T. SMITH, and
LINDA M. GAUDETTE, Administrative Patent Judges.

KRATZ, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on an appeal under 35 U.S.C. § 134 from the
Examiner’s final rejection of claims 1-4. We have jurisdiction pursuant to
35 U.S.C. § 6.

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Application 11/000,309

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Appellants’ claimed invention is directed to an isolator system.
Claim 1 is illustrative and reproduced below:
1. An isolator system comprising a sterile work chamber in which a
sterile condition of the interior is maintained, a robot which is placed in the
sterile work chamber having an operating arm for performing various
operations within the sterile work chamber, a sterilizing gas supply unit for
supplying a sterilizing gas to the interior of the sterile work chamber,
a gas supply unit for supplying a gas from outside of the sterile work
chamber to the interior of the robot, said gas supply unit having a vent tube
having one end connected to the exterior of the sterile work chamber and a
top end opening of the other end opened inside the operating arm at a top
end side, and a base portion opening opened inside the robot at a base
portion side and
a control unit for controlling the operation of the gas supply unit and
the pressure inside the robot,
wherein when the sterile work chamber is sterilized with the
sterilizing gas, the control unit controls the gas supply unit so that the gas
from the gas supply unit is supplied to the interior of the robot through one
of the top end opening and the base portion opening and the gas circulated
through the interior of the robot may be discharged to the outside of the
robot through the other opening, and the control unit reduces the pressure
inside the robot relative to the pressure inside the sterile work chamber to
which the sterilizing gas is supplied from the sterilizing gas supply unit and
reduces the concentration of the sterilizing gas flowing into the robot.
The Examiner relies on the following prior art references as evidence
in rejecting the appealed claims:
Petersen 5,730,777 Mar. 24, 1998
Suzuki US 6,267,022 B1 Jul. 31, 2004
Haas US 6,835,248 B1 Dec. 28, 2004

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Claims 1-4 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Petersen in view of Suzuki and Haas.
We affirm the stated rejection for substantially the reasons set forth by
the Examiner in the Answer.1 We add the following for emphasis only.
Appellants raise a principal dispositive issue by arguing that the
Examiner’s rejection is not tenable because Suzuki and Haas represent non-
analogous prior art to both the claimed subject matter and Petersen, which,
according to Appellants, renders a combination of Suzuki and Haas with
Petersen improper (Br. 6-7). The Examiner contends otherwise (Ans. 6 and
11). Because we are not persuaded by Appellants’ non-analogous art
contentions, we resolve this issue by agreeing with the Examiner’s
analogous art determination.
It is well settled that the prior art relevant to an obviousness
determination encompasses not only the field of the inventors’ endeavor but
also any analogous arts. See Heidelberger Druckmaschinen AG v. Hantscho
Commercial Products Inc., 21 F.3d 1068, 1072 (Fed. Cir. 1994) and In re
Wood, 599 F.2d 1032, 1036 (CCPA 1979). The test of whether a reference
is from a non-analogous art is first, whether it is within the field of the
inventor’s endeavor, and second, if it is not, whether it is reasonably
pertinent to the particular problem with which the inventor was involved.
See Wood, 599 F.2d at 1036. A reference is reasonably pertinent if, even
though it may be in a different field of endeavor, it is one which because of

1 The appealed claims have been considered separately to the extent
separately argued. Also, we note that this is the second appeal involving the
disclosed subject matter and substantially similar claimed subject matter. In
a Decision rendered July 30, 2007, the Examiner’s obviousness rejection of
a previous version of claims 1-4 over Petersen and Suzuki was affirmed.
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the matter with which it deals, logically would have commended itself to an
inventors’ attention in considering his problem. In re Clay, 966 F.2d 656,
659 (Fed. Cir. 1992).
Appellants argue that Suzuki is directed to an articulated robot used in
a clean room for providing or discharging air and, therefore, is non-
analogous art relative to Petersen’s gas supply or pressurization system (Br.
6). We disagree for reasons stated by the Examiner, which reasoning has not
been persuasively refuted by Appellants. As the Examiner determined,
Petersen teaches that a robot can be employed for manipulation of objects in
the sterile working chamber (clean room) as one alternative of Petersen’s
isolator system wherein a manipulator device is employed having gas
circulating at relatively low pressure therethrough, and Suzuki teaches a
robot including gas supply/suction ports that can be used in such an
environment while forming a relatively low pressure region inside the robot
to prevent release of contaminant (dust) into the clean room (Ans. 4-7;
Peterson, col. 9, ll. 15-31; Suzuki, col. 1, l. 34 - col. 3. l. 55). Thus, the
robot of Suzuki is clearly analogous art to Petersen and to the claimed
subject matter as Petersen expressly discloses the use of a robot as an option
for manipulating samples in a sterile chamber (clean room), like Appellants’
claimed subject matter.
Similarly, the Examiner has furnished a facially reasonable
explanation setting forth why, in the Examiner’s view, the robotic structure
of Haas and the gas vent tube thereof represent analogous prior art to the
claimed subject matter and Petersen given that Haas is directed to a robotic
device employing a vent tube as part of the gas supply structure for the robot
(Ans. 7, 10-12; Haas, col. 5, l. 13 - col. 6, l. 11, Fig. 1). Appellants have not
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persuasively explained why one of ordinary skill in the art would not have
considered the gas supply vent tube of Haas to have been relevant and
applicable to the gas supply for the robot employed in Petersen, as further
taught by Suzuki and for reasons stated by the Examiner (Ans. 7, 10-12).
Rather Appellants note that the robot of Haas is employed as part of a paint
applicator system, including an enclosed paint spray booth (Br. 6-7).
However, Appellants do not explain why this disclosed utility for the robotic
device of Haas renders the disclosure of Haas with respect to using a vent
tube for supplying gases to an inner location of a robot inapplicable to the
robotic gas supply system of Suzuki as employed with Petersen’s isolator
system as maintained by the Examiner to be within the province of an
ordinarily skilled artisan (Ans. 7, 10-12; see generally Br.).
As for Appellants’ additional arguments, particularly with respect to a
lack of motivation to employ Suzuki’s robot as part of the isolator system of
Petersen and regarding dependent claims 2-4, we agree with the Examiner’s
disposition of these arguments (Ans. 6, 7, and 11-13).
On this appeal record, we affirm the Examiner’s obviousness
rejection.
CONCLUSION/ORDER
The Examiner’s decision to reject claims 1-4 under 35 U.S.C. § 103(a)
as being unpatentable over Petersen in view of Suzuki and Haas is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1).

AFFIRMED

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Application 11/000,309

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PL Initial:
sld

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